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Abstract:

The system, method and product of the present invention provides
protection against an unknown defect in the title of an intellectual
property asset (IPA) having various intellectual property rights (IPRs)
associated therewith. Through due diligence, a variety of defects or
title encumbrances are identified and investigated, and, if possible,
cured.

Claims:

1. A method for protecting against defects in the title of an
intellectual property asset, comprising: identifying at least one
electronic database containing records therein pertaining to title in an
intellectual property asset; retrieving at least one electronic database
record on said intellectual property asset from said at least one
electronic database; analyzing said at least one electronic database
record for data on title and other defects of said intellectual property
asset; and assessing risk associated with said title and other defects of
said intellectual property asset, whereby said risk in the title and
other defects for said intellectual property asset is minimized, reduced
or spread.

2. The method according to claim 1, wherein said step of analyzing
comprises a check step, said check step being selected from the group
consisting of: (a) obtaining a description of at least one IPA from an
inquiring party, (b) determining what legal regime provides protection
for the IPA, (c) performing a search within the relevant government
records depository to determine the official chain of custody of the IPA,
(d) performing a search within the relevant government records depository
(e.g.--a U.S. Article 9 State filing office) to determine whether there
are any liens, judgments, or other encumbrances that have ever or are
currently encumbering the IPA, (e) examining each party within the
publicly-discoverable chain of custody of the IPA from the creator and/or
originator to the inquiring party to determine whether each party paid
any and all relevant state, local and federal taxes while they were the
legal title holder of the IPA in question, (f) performing a search within
the relevant government records depository to determine whether
assignments were properly recorded as the IPA under review passed from
one party to another, (g) interviewing the original inventor or creator,
if possible, to obtain an understanding of how and when the invention
embodied within the IPA under review was created, (h) interviewing all
parties even tangentially involved in the creation and/or origination of
the IPA under review to determine whether the proper parties were listed
as inventors and/or authors of the IPA under review according to the
local inventorship/IP ownership law applicable to each purported inventor
or author at the time their inventive contribution was made, (i)
interviewing all parties involved in the creation and/or origination of
the IPA under review to determine whether any parties involved with the
creation or origination of the IPA under review engaged in any conduct
that could or might be considered inequitable conduct under US federal or
state law, or under the law of any relevant foreign country, (j)
performing a search within the relevant government records depository to
determine whether any applicable maintenance fees were paid promptly and
in full within the allotted time under applicable law, (k) performing a
search within the relevant government records depository to determine
whether any parties within the chain of custody or who were in any way
involved in the creation or origination of the IPA under review attempted
to or did bequeath or in any other way transfer whatever rights they
might have had, or that they might have thought they had, in the IPA to
some third-party, (l) examining any available "as filed" putative
assignment documents to determine whether they were properly signed, and
to ensure that the assignor in each case did not hold back any
reversionary interest, (m) examining each inventor or interest holder in
the chain of custody of the IPA to determine whether any such person is
now, or was ever a citizen of or located within a country or jurisdiction
that provides special rights to inventors, e.g.--Germany, Austria, etc.,
during any activities related to their ownership or inventorship of the
IPA, (n) examining the public records of any corporate entity that ever
had an interest in the IPA to determine if there are any publicly
discoverable transfers that were not recorded, for whatever reason, at
the official government records depository that nevertheless might
constitute legally valid transfers of an interest in such IPA to a
third-party, (o) examining the file history of the IPA, if any, to
determine whether the assignee or owner of the IPA, or their agents or
designees engaged in any conduct that could be construed as inequitable
conduct in the US or in any foreign country at the time of the IPA's
prosecution/examination, (p) examining the employment agreements of any
employees even tangentially involved in the creation and/or origination
of the invention embodied within the IPA under review to determine
whether they had a legally binding obligation under the applicable local
law to assign their rights in any inventions they might make to their
employer, or whether, in the alternative that such a transfer might be
lacking consideration or otherwise defective, (q) obtaining any private
transfer documents that are not available via the public records that
relate to the IPA to determine if any unknown third-parties have rights
in the IPA, (r) examining any publicly-available financial statements and
records for all parties within the chain of title between the originators
and/or inventors of the IPA and the interested party to determine whether
they had, at the time they possessed or thought they possessed an
interest in the IPA, a financial motivation or need to engage in conduct
that potentially could be seen as inequitable conduct in the US or in any
relevant foreign jurisdiction or to instruct their agents to engage in
such conduct.

3. A system for protecting against defects in the title of an
intellectual property asset, comprising: identification means for
identifying at least one electronic database containing therein records
pertaining to title in an intellectual property asset; retrieving means
for retrieving at least one electronic database record on said
intellectual property asset from said at least one electronic database;
analyzing means for analyzing said at least one electronic database
record for data on title and other defects of said intellectual property
asset; and assessing means for assessing risk associated with said title
and other defects of said intellectual property asset, whereby said risk
in the title and other defects for said intellectual property asset is
minimized, reduced or spread.

4. A product for protecting against defects in the title of an
intellectual property asset, comprising: a recitation of records
identified pertaining to an intellectual property asset, said records
from at least one electronic database; a recitation of title and other
defects identified pertaining to said intellectual property asset; a
recitation of risks associated with said title and other defects in said
intellectual property asset, whereby said risks in the title and other
defects for said intellectual property asset are minimized, reduced or
spread.

5. The method according to claim 1, wherein the time from initiation of
the process to the end can be completed in less than 1 week.

6. The method according to claim 1, wherein the initiation of the process
is preceded by the provision of a series of inputs about the intellectual
property asset by a user.

7. The method according to claim 6, wherein the process can be completed
in less than 1 week.

8. The method according to claim 6, wherein the input that precedes the
initiation of the process is communicated via a point and click
computer-user interface presented to the user via the internet.

9. The method according to claim 8, wherein the process can be completed
in less than 1 week.

10. The method according to claim 6, wherein the input that precedes the
initiation of the process is communicated via a point and click
computer-user interface presented to the user via a mobile phone app.

11. The method according to claim 10, wherein the process can be
completed in less than 1 week

12. The method according to claim 6, wherein the input that precedes the
initiation of the process is communicated via a point and click
computer-user interface presented to the user via a tablet computer
device.

13. The method according to claim 12, wherein the process can be
completed in less than 1 week.

14. The method according to claim 2, wherein one or more check steps can
be completed in less than 1 week.

15. The method according to claim 2, wherein one or more check-steps are
preceded by the communication of a series of inputs about the
intellectual property asset by a user.

16. The method according to claim 15, wherein the input that precedes the
initiation of one or more check-steps is communicated via a point and
click computer-user interface presented to the user via a mobile phone
app.

17. The method according to claim 16, wherein one or more checks steps
can be completed in less than 1 week

18. The method according to claim 15, wherein the input that precedes the
initiation of one or more check-steps is communicated via a point and
click computer-user interface presented to the user via the internet.

19. The method according to claim 18, wherein one or more checks steps
can be completed in less than 1 week

20. The method according to claim 15, wherein the input that precedes the
initiation of one or more check-steps is communicated via a point and
click computer-user interface presented to the user via a tablet computer
device.

21. The method according to claim 20, wherein one or more checks steps
can be completed in less than 1 week.

22. The system according to claim 3, wherein the system can be executed
systematically.

23. The system according to claim 3, wherein the system can be executed
one full time in less than 1 week.

24. The system according to claim 3, wherein the identification means
step is preceded by the communication of a series of inputs about the
intellectual property asset by a user.

25. The system according to claim 24, wherein the input that precedes the
identification means step is communicated via a point and click
computer-user interface presented to the user via a mobile phone app.

26. The system according to claim 25, wherein the system can be operated
one full time in less than 1 week.

27. The system according to claim 24, wherein the input that precedes the
identification means step is communicated via a point and click
computer-user interface presented to the user via the internet.

28. The system according to claim 27, wherein the system can be operated
one full time in less than 1 week.

29. The system according to claim 24, wherein the input that precedes the
identification means step is communicated via a point and click
computer-user interface presented to the user via a tablet computer
device.

30. The system according to claim 29, wherein the system can be operated
one full time in less than 1 week.

31. The product according to claim 4, wherein the product is sold via
e-commerce, over the phone, via mobile phone applications, or other
similar means, wherein the intellectual property asset can be identified,
and the risks associated therewith are minimized, reduced or spread.

32. The product according to claim 4, wherein the intellectual property
asset can be identified, and the risks associated therewith are
minimized, reduced or spread in 1 week or less.

33. The product according to claim 4, wherein the risk in the title and
other defects for said intellectual property asset are minimized, reduced
or spread via an agreement between the user and a third party wherein the
third party agrees to insure the risk up to a certain limit.

34. The product according to claim 33, wherein the agreement is reached
based on a price that is less than five percent of the value of the
limit.

35. The product according to claim 34, wherein the agreement is reached
in less than 1 week.

36. The product according to claim 33, wherein the agreement is reached
in less than 1 week.

37. The product according to claim 33, wherein the user's request that an
agreement be reached is initiated via a point and click computer-user
interface presented to the purchaser via the interne.

38. The product according to claim 37, wherein the agreement is reached
in less than 1 week.

39. The product according to claim 37, wherein the agreement is reached
based on a price that is less than five percent of the value of the
limit.

40. The product according to claim 33, wherein the user's request that an
agreement be reached is initiated via a point and click computer-user
interface presented to the purchaser via a mobile phone app.

41. The product according to claim 40, wherein the agreement is reached
in less than 1 week.

42. The product according to claim 40, wherein the agreement is reached
based on a price that is less than five percent of the value of the
limit.

43. The product according to claim 42, wherein the agreement is reached
in less than 1 week.

44. The product according to claim 33, wherein the user's request that an
agreement be reached is initiated via a point and click computer-user
interface presented to the purchaser via a tablet computer device.

45. The product according to claim 44, wherein the agreement is reached
in less than 1 week.

46. The product according to claim 44, wherein the agreement is reached
based on a price that is less than five percent of the value of the
limit.

47. The product according to claim 46, wherein the agreement is reached
in less than 1 week.

Description:

CROSS-REFERENCE TO RELATED APPLICATIONS

[0001] This application claims priority to international patent
application PCT/US2009/055740, filed Sep. 9, 2009, entitled "SYSTEM,
METHOD AND PRODUCT FOR INTELLECTUAL PROPERTY TITLE PROTECTION," and U.S.
Provisional Application Ser. No. 61/136,384, filed Sep. 2, 2008, entitled
"SYSTEM, METHOD AND PRODUCT FOR THE PROTECTION AGAINST A DEFECT IN TITLE
OF AN INTELLECTUAL PROPERTY ASSET," the disclosures of which are
incorporated herein by reference.

FIELD OF THE INVENTION

[0002] The present invention relates to techniques to improve the
protection of intellectual property assets and clarifying the rights
thereto, and more particularly relates to protection against adverse
consequences of a defect in the title to an intellectual property asset.

BACKGROUND OF THE INVENTION

[0003] Patents, trademarks, service marks, trade secrets, mask works,
trade dress rights and copyrights, referred to collectively herein as
"intellectual property assets" (IPAs), provide an owner with the right to
exclude others from making, using, selling, offering for sale, or
importing a particular product or service. Such intellectual property
rights (IPR) have become quite valuable articles of commerce as society
continues to shift toward knowledge-based technologies, with IPR often
forming the bulk of corporate valuation. As with land and various
objects, ascertaining title and ownership of IPR assets is critical in
transfers, licensing and other interactions between buyers and sellers.

[0004] Ascertaining ownership and title for intangible assets, however, is
quite complicated since intangible assets like IPR are quite unlike
physical objects or land, where the res or thing speaks for itself.
Intellectual property rights can, for example, be created by several
different parties collaborating together in different places at the same
time, can be implied within a work such as a patent and otherwise be less
obvious than corresponding rights associated with physical things. For
example, unlike a physical asset or a real property asset, an IPR could
vest in multiple parties simultaneously who are each in a different
location and thus governed by a different local inventorship/IPR
ownership law. What is more, in some cases, a party could be entitled to
inventorship rights, and not immediately be aware of it, thereby creating
a potential or actual interest dependent on future events, e.g., issuance
of a patent. Akin to springing executory interests in property law, IP
rights may suddenly appear, although in actuality their potential was
present at all times.

[0005] When a business or portion of a business is sold or an intellectual
property asset licensed, the purchaser and/or the licensee usually
conducts a limited "due diligence" analysis to determine whether the
person purporting to provide them with clear title to the intellectual
property asset(s) to be purchased or licensed can legally do so. Because
an extensive analysis of the intellectual property asset(s) involves both
legal and business value analysis and contains some unknown and even some
unknowable elements, the purchaser of a business or business unit and/or
the licensee of an intellectual property asset necessarily must assume
some degree of risk related to the clarity of their claim to title to the
intellectual property assets being purchased and/or licensed.

[0006] As with other types of assets bearing risks, it would therefore be
useful to provide a system, method and product for spreading the risk
associated with a purchase or licensing of intellectual property assets
among one or more parties, some of whom are neither purchasers nor
sellers of the assets.

[0007] In view of the aforementioned subtleties of IPR title
determinations, there is, therefore, a present need for techniques to
minimize the inherent risk involved in transactions involving IPRs, which
increasingly are almost all business transactions.

[0008] An object of the present invention is to provide a method for
spreading the financial risks associated with the purchase, ownership,
practice and use of intellectual property assets.

[0009] Another object of the present invention is to provide an insurance
product which protects purchasers (interested parties) against defects in
the title of intellectual property assets that they buy or license.

[0010] A further object of the present invention is to provide a method of
insuring that the seller or licensor of patents, trademarks, copyrights
and/or other intellectual property assets possesses such title when he or
she attempts to sell or license the intellectual property asset in
question to the buyer/licensee, such that he or she, as the
seller/licensor, can pass marketable title to the buyer/licensor at the
time of the transaction.

[0011] Another object of the present invention is to provide insurance for
patents and other intellectual property assets in the context of
acquisitions and mergers.

[0012] Yet another object of the present invention is to provide insurance
for patents and other intellectual property assets in the context of
public market sales of multiple licenses for intellectual property
assets.

[0013] A further object of the present invention is to provide insurance
for patents and other intellectual property assets in the context of
private market sales of one or many licenses for intellectual property
assets.

[0014] Another object of the present invention is to provide insurance for
patents and other intellectual property in the context of exclusive
licensing transactions.

[0015] A further object of the present invention is to provide insurance
for patents and other intellectual property in the context of
non-exclusive licensing transactions.

[0016] Yet another object of the present invention is an insurance product
that provides insurance to interested parties for their intellectual
property assets covered under the product against claims to the financial
enjoyment, possession, use, or control of the intellectual property asset
under review, or any derivative works if any, brought by a third-party
who is not the interested party(s).

[0017] Other objects of the present invention will become apparent from
the remainder of the specification and the claims.

SUMMARY OF THE INVENTION

[0018] The present invention is directed to various methods, systems and
products that identify and minimize the risk inherent in transactions
involving intellectual property assets (IPA), the titles for which may be
encumbered in subtle ways.

[0019] The system, method and product of the present invention provides
protection against an unknown defect in the title of an intellectual
property asset (IPA) having various intellectual property rights (IPRs)
associated therewith. Through due diligence, a variety of defects or
title encumbrances are identified and investigated, and, if possible,
cured.

[0020] A corresponding data processing system, insurance proposal form and
computer-generated insurance policy form also are described herein. The
method, system and products/forms of the invention can be used, for
example, as part of a "due diligence" analysis in the context of the
purchase and/or sale and assignment of IPAs, for the licensing of those
assets, the public auction of the assets, the public sale of shares of
the asset, and other uses, dispositions or transfers.

BRIEF DESCRIPTION OF THE DRAWINGS

[0021] The features, aspects, and advantages of the present invention will
become better understood with regard to the following Detailed
Description, appended claims, and accompanying drawings, where:

[0022]FIG. 1 is an operational flowchart of various aspects of the
present invention; and

[0023]FIG. 2 illustrates a transaction involving the intellectual
property asset pursuant to the teachings of the present invention.

DETAILED DESCRIPTION OF THE PREFERRED EMBODIMENTS

[0024] The following detailed description is presented to enable any
person skilled in the art to make and use the invention. For purposes of
explanation, specific nomenclature is set forth to provide a thorough
understanding of the present invention. However, it will be apparent to
one skilled in the art that these specific details are not required to
practice the invention. Descriptions of specific applications are
provided only as representative examples. Various modifications to the
preferred embodiments will be readily apparent to one skilled in the art,
and the general principles defined herein may be applied to other
embodiments and applications without departing from the scope of the
invention. The present invention is not intended to be limited to the
embodiments shown, but is to be accorded the widest possible scope
consistent with the principles and features disclosed herein.

[0025] As discussed, the value of intellectual property assets (IPAs) and
intellectual property rights (IPRs) attendant thereto have increased
dramatically over the past few decades to in many cases dominant
corporate holdings. Ascertaining ownership interests, e.g., title, is
somewhat more difficult for these assets in view of some complexities in
the creation, maintenance and transference of these IPAs. The present
invention is directed to techniques, systems, methods and products that
attempt to manage risk associated with IPA instruments embued with IPR,
and determine any "title" defects associated therewith, thereby providing
a valuable mechanism to protect the interests of owners and purchasers of
IPA instruments, the currency of today's economy.

[0026] One problem encountered when dealing with IPA instruments is the
inadequacy and vagueness of many existing insurance products relating to
IPR. With the complexities and subtleties of IPR it is not surprising
that quantifying the risks associated with an IPA is quite difficult,
leading many policies with limitations on the degree of risk involved.

[0027] The present invention is directed to a variety of techniques for
protecting against IPR defects, some of which are set forth below. For
example, a preferred embodiment of the present invention is a system,
method and product for providing protection against a defect in title of
an IPA, comprising: [0028] (i) entering into business negotiations with
an interested party in order to sell them an insurance product that
provides them with the protections against the occurrence of the risk
events described in the relevant IPA title protection policy; [0029] (ii)
performing steps (a) through (r), as described hereinbelow, to insure
that the risks associated with the extension of such coverage are
appropriate, [0030] (iii) obtaining payment for the insurance product
from the interested party, and [0031] (iv) paying any and all claims made
by the interested party, if and when a third-party rightfully and
correctly asserts that they have a right to the financial enjoyment,
possession, use, or control of the IPA under review, or any derivative
works if any, which was unknown to the interested party and the insuring
party at the time the insurance product was purchased.

[0032] In view of the complexity in the determination of intellectual
property rights within IPAs, Applicant has formulated a technique for
analyzing these assets for trouble spots, identifying the problems areas,
and providing potential cures to remedy deficiencies. A preferred form of
the present invention is a method of providing protection against a
defect in title of an IPA, comprising a variety of potential actions
performed in the identification and investigation of the actual or
potential defects, including:

[0033] (a) obtaining a description of at least one IPA from an inquiring
party,

[0035] (c) performing a search within the relevant government records
depository to determine the official chain of custody of the IPA,

[0036] (d) performing a search within the relevant government records
depository (e.g.--a U.S. Article 9 State filing office) to determine
whether there are any liens, judgments, or other encumbrances that have
ever or are currently encumbering the IPA,

[0037] (e) examining each party within the publicly-discoverable chain of
custody of the IPA from the creator and/or originator to the inquiring
party to determine whether each party paid any and all relevant state,
local and federal taxes while they were the legal title holder of the IPA
in question,

[0038] (f) performing a search within the relevant government records
depository to determine whether assignments were properly recorded as the
IPA under review passed from one party to another,

[0039] (g) interviewing the original inventor or creator, if possible, to
obtain an understanding of how and when the invention embodied within the
IPA under review was created,

[0040] (h) interviewing all parties even tangentially involved in the
creation and/or origination of the IPA under review to determine whether
the proper parties were listed as inventors and/or authors of the IPA
under review according to the local inventorship/IP ownership law
applicable to each purported inventor or author at the time their
inventive contribution was made,

[0041] (i) interviewing all parties involved in the creation and/or
origination of the IPA under review to determine whether any parties
involved with the creation or origination of the IPA under review engaged
in any conduct that could or might be considered inequitable conduct
under US federal or state law, or under the law of any relevant foreign
country,

[0042] (j) performing a search within the relevant government records
depository to determine whether any applicable maintenance fees were paid
promptly and in full within the allotted time under applicable law,

[0043] (k) performing a search within the relevant government records
depository to determine whether any parties within the chain of custody
or who were in any way involved in the creation or origination of the IPA
under review attempted to or did bequeath or in any other way transfer
whatever rights they might have had, or that they might have thought they
had, in the IPA to some third-party,

[0044] (l) examining any available "as filed" putative assignment
documents to determine whether they were properly signed, and to ensure
that the assignor in each case did not hold back any reversionary
interest,

[0045] (m) examining each inventor or interest holder in the chain of
custody of the IPA to determine whether any such person is now, or was
ever a citizen of or located within a country or jurisdiction that
provides special rights to inventors, e.g.--Germany, Austria, etc.,
during any activities related to their ownership or inventorship of the
IPA,

[0046] (n) examining the public records of any corporate entity that ever
had an interest in the IPA to determine if there are any
publicly-discoverable transfers that were not recorded, for whatever
reason, at the official government records depository that nevertheless
might constitute legally valid transfers of an interest in such IPA to a
third party,

[0047] (o) examining the file history of the IPA, if any, to determine
whether the assignee or owner of the IPA, or their agents or designees
engaged in any conduct that could be construed as inequitable conduct in
the US or in any foreign country at the time of the IPA's
prosecution/examination,

[0048] (p) examining the employment agreements of any employees even
tangentially involved in the creation and/or origination of the invention
embodied within the IPA under review to determine whether they had a
legally binding obligation under the applicable local law to assign their
rights in any inventions they might make to their employer, or whether,
in the alternative that such a transfer might be lacking consideration or
otherwise defective,

[0049] (q) obtaining any private transfer documents that are not available
via the public records that relate to the IPA to determine if any unknown
third-parties have rights in the IPA,

[0050] (r) examining any publicly-available financial statements and
records for all parties within the chain of title between the originators
and/or inventors of the IPA and the interested party to determine whether
they had, at the time they possessed or thought they possessed an
interest in the IPA, a financial motivation or need to engage in conduct
that potentially could be seen as inequitable conduct in the US or in any
relevant foreign jurisdiction or to instruct their agents to engage in
such conduct.

[0051] In a preferred form of the present invention, the system, method
and product are executed through a computer program.

[0052] In another preferred form of the present invention, the method
comprises a data processing system, either executed by a computer,
processor or other physical operational component.

[0053] In another preferred form of the present invention, the interested
party contracts with the insuring party, who agrees to indemnify the
interested party if and when some third-party asserts that they have a
superior claim to the IPA under review in a judicial proceeding, provided
that certain pre-conditions are met. Those preconditions being one or
more of the steps outlined and described hereinabove as steps (a) through
(r).

[0054] In another preferred embodiment of the present invention, the
interested party contracts with the insuring party, who agrees to
indemnify the interested party up to a certain amount stated in the
insurance contract (policy limit), in the event that some third-party
asserts that they have some claim to the IPA under review, provided that
certain pre-conditions are met. Those preconditions being one or more of
the steps outlined and described hereinabove as steps (a) through (r).

[0055] In another preferred form of the invention the interested party
contracts with the insuring party, who agrees to indemnify the interested
party to a certain sum certain stated in the insurance product (policy
limit), in the event that some third-party asserts that they have a
superior claim to a right or rights associated with the IPA under review,
provided that certain pre-conditions are met. Those preconditions being
one or more of the steps outlined and described hereinabove as steps (a)
through (r). In this form of the invention the overall risk that is
transferred from the interested party to the insuring party or parties
can and often is shared according to a staggered schedule of policy
limits, e.g., the first insuring party agrees to indemnify the interested
party in the event that certain events happen up to a sum certain (e.g.,
$10M), with a second insuring party agreeing do the same for amounts
claimed by the interested party that are greater than $10M but less than
$50M, etc.

[0057] The "inquiring party" preferably is a client, an officer of a
client, a director of a client, a prospective purchaser or licensee of
the IPA or assets under review, or a director or officer of the
prospective purchaser or licensee.

[0058] The "legal regime" in step (b) preferably is either the trade
secret law of the jurisdiction where the trade secrete was housed and/or
created, patent law, copyright law, trademark and trade dress law, mask
work law, copyright law, or some other law designed to provide rights and
protections to applicable IPAs anywhere in the world.

[0059] The "relevant government records depository" referenced in the
aforementioned steps comprises the federal USPTO records for United
States patents, trademarks and trade dress, the federal repository for
copyrights, and state law personal property archives if and to the extent
that they exist, and other similarly situated government,
quasi-government and other organizations around the world that perform
the same or similar tasks relating to IPRs and general intangible assets
created or owned within their jurisdiction.

[0060] The "chain of custody" in the aforementioned steps comprises the
list of legal persons who have ever had any legal right to the IPA under
review according to the office where such records are kept and/or where
perfected interests in such property can be obtained.

[0061] The "official chain of custody" described in step (c) means the
publicly-available list of assignments or title transfers housed or made
available by organizations like the USPTO, WIPO, and other similarly
situated organizations that maintain archives of assignments for
intangible assets, particularly those that maintain such records for
IPAs.

[0062] Applicant respectfully submits that one person skilled in the art
will understand what is meant by an "as filed" putative assignment
document in step (l).

[0063] Applicant respectfully submits that one person skilled in the art
will understand what is meant by the term "special rights" to inventors.

[0064] The "official government records depository" referenced in step (n)
comprises offices like the USPTO in the United States, and other
similarly-situated organizations around the world that examine patent
applications and issue patent grants after the culmination of those
examinations on claims that have been deemed allowed. In a particularly
preferred embodiment of the present invention, the IPA or assets include
at least one patent right. The IPAs covered by the method of the
invention also can include pending patent applications, e.g.,
provisional, utility, design, plant, domestic and foreign.

[0065] The method of the invention most is preferably directed to a
situation in which compensation is offered to the insuring party in
connection with (e.g., upon, after or subject to) transfer of ownership
of the IPA or assets to a buyer, or licensing of the assets, either
exclusive or non-exclusive, from a seller and/or licensor.

[0066] Another preferred embodiment of the present invention is a method
of insuring against a risk of a defect in the title of a patent right,
comprising:

[0067] performing steps (a) through (r) on behalf of a buyer and/or
licensee and in so doing,

[0068] determining that there are no liens, mortgages or other
encumbrances on the patent(s) under evaluation,

[0069] determining that the proper persons were listed as inventors and
that there was no inequitable conduct on the part of anyone who possessed
rights in the patent(s) under evaluation during the time that said
persons possessed such rights or any time reasonable therebefore or
thereafter, and

[0070] agreeing to provide compensation to a person with an interest in
the inquiring party to pay for a portion of any loss experienced by the
inquiring person as a result of their purchase of the patent or of their
payment for a license to the patent under review during a particular
period of time after receipt of an insurance premium, the insurance
premium being paid in connection with a transfer of ownership or
licensing, either exclusive or nonexclusive, of the patent right.

[0071] A further preferred embodiment of the present invention is a method
of insuring against a risk of a defect in the title of an intellectual
property right, comprising:

[0072] performing steps (a) through (r) on behalf of a buyer and/or
licensee and in so doing,

[0073] determining that there are no liens, mortgages or other
encumbrances on the IPA under evaluation,

[0074] determining that the proper persons were listed as inventors and/or
originators for the intellectual asset under review and assuring that
that there was no inequitable conduct on the part of anyone who possessed
rights in the intellectual asset under review during the time that said
persons possessed such rights or any time reasonable therebefore or
thereafter, and

[0075] agreeing to provide compensation to a person with an interest in
the inquiring party to pay for a portion of any loss experienced by the
inquiring person as a result of their purchase of the intellectual asset
under review or of their payment for a license to the intellectual asset
under review during a particular period of time after receipt of an
insurance premium, the insurance premium being paid in connection with a
transfer of ownership or licensing, either exclusive or nonexclusive, of
the intellectual asset under review.

[0076] In another preferred embodiment of the present invention, there is
a data processing system and/or computer program for use in administering
an insurance program to insure against the occurrence of an event that
clouded or impaired the title to an IPA, comprising:

[0077] (a) performing the aforementioned steps (a) through (r) for a given
IPA, and

[0078] (b) means for calculating a proposed insurance premium based upon a
percentage of the overall deal value being insured.

[0079] A further preferred embodiment of the present invention is an
insurance proposal form, comprising:

[0080] a plurality of first pattern areas including alphanumeric
characters representing a set of insurable IPAs owned by a
seller/licensor,

[0081] a plurality of second pattern areas including alphanumeric
characters representing a likelihood that one or more particular IPAs in
the set would be found to have defects in their title, and

[0082] a plurality of third pattern areas including alphanumeric
characters representing a proposed premium for insuring against an
unexpected event that caused the title to the insured IPAs to become
clouded or unmarketable.

[0083] The insurance proposal form preferably further comprises a
plurality of fourth pattern areas including alphanumeric characters
representing a person designated to receive the insurance proposal form,
said person being a party with an interest in the inquiring party.

[0084] Yet another preferred embodiment of the present invention is an
insurance proposal form or product, comprising:

[0085] a plurality of first pattern areas including alphanumeric
characters representing a set of insurable IPAs owned by a
seller/licensor,

[0086] a plurality of second pattern areas including alphanumeric
characters representing a likelihood that one or more particular IPAs in
the set would be found to have defects in their title, and

[0087] a plurality of third pattern areas including alphanumeric
characters representing a second party designated to receive the
insurance proposal form, the second party being a proposed purchaser or
licensee of the insurable IPA(s).

[0088] In yet another preferred embodiment, the present invention is a
computer-generated insurance policy form offering to insure at least a
portion of the value of at least one IPA exclusive of legal fees, the
insurance policy form being generated in connection with a proposed
transfer of ownership or a licensing transaction of said at least one
IPA. The policy form preferably is directed to patent or copyright
rights.

[0089] Yet another preferred embodiment of the present invention is a
computer-generated insurance form for protecting a right to practice
technology which is described in an agreement to transfer IPAs of a
company, the computer-generated insurance form being generated in
connection with a proposal to transfer ownership of the IPAs from a first
party to a second party.

[0090] A further embodiment of the present invention is an insurance
policy for insuring at least a portion of the value of an IPA, the
insurance policy becoming effective at a time of transfer of ownership or
at the moment the license to the IPA becomes effective.

[0091] Another embodiment of the present invention is a method of insuring
intellectual property which includes the above-described method of
providing protection against the occurrence of an event which clouded the
title to IPA such that it became less than marketable, and also includes
other types of insurance protection for the intellectual property, such
as, for example, payment of legal fees and other expenses associated with
the enforcement of intellectual property rights.

[0092] Further embodiments of the present invention are a method and an
insurance product for protecting a right to practice technology which is
described in an agreement to transfer IPAs of a company, the term of the
insurance commencing at the time of transfer of the assets from a first
party to a second party.

[0093] The present invention, accordingly, comprises the several steps and
the relation of one or more of such steps with respect to each of the
others and the article possessing the features, properties, and the
relation of elements exemplified in the following examples.

PROPHETIC EXAMPLES

Example 1

[0094] The method is practiced in the context of a license agreement
between two parties, where the buyer/licensee is the "interested party".

Example 2

[0095] The method is practiced in the context of a sale of multiple
non-exclusive licenses to the IPA under review where the interested party
is the clearing house or investment bank or bank engaged in underwriting
the sale of the IPA under review.

Example 3

[0096] The method is practiced in the context of a sale of multiple
non-exclusive licenses to the IPA under review where the interested party
is the seller/licensee who has engaged an investment banc or bank or
clearing house to underwrite the sale or licensing of the IPA under
review.

Example 4

[0097] The method is practiced in the context of a sale of multiple
non-exclusive licenses to the IPA under review where the interested party
is the buyer who has purchased a license or right to an absolute
assignment of rights from an investment banc or bank or clearing house
who were underwriting the sale or licensing of the IPA under review.

Example 5

[0098] The method is practiced in the context of a sale of licenses to the
IPA under review where the interested party is the buyer who has
purchased a license or right to an absolute assignment of rights from an
from a third party in a private non-public market transaction.

Example 6

[0099] The method is practiced in the context of a sale of licenses to the
IPA under review where the interested party is the seller who is selling
a right to license or a right to an absolute assignment of the rights in
an IPA under review to a third party in a private non-public market
transaction.

Example 7

[0100] The method is practiced in the context of a sale of assets or
merger of a two corporations where the intellectual property under review
is an asset owned by the party being sold or participating in the merger
and the interested party is the buyer, seller, buyer's agent, seller's
agent or some other party with an interest in the transaction.

[0101] With the aforementioned embodiments of the present invention and
prophetic examples thereof described, the following illustrations further
elaborate upon the various manifestations of the principles set forth
herein and claimed.

[0102] With reference now to FIG. 1 of the Drawings, there is illustrated
therein an operations flowchart, generally designated by the reference
numeral 100, of aspects of the present invention. An IPA 105 under
consideration is identified and a search, generally designated by the
reference numeral 110, is performed of various records, as described
hereinabove, for potential encumbrances to the ownership, use or
transference thereof. While the search 110 is progressing, a check is
made periodically on the status of the search, a conditional generally
designated in FIG. 1 by the reference numeral 115, to ascertain if the
search 110 is complete. If so, control passes to an encumbrances
conditional, designated by the reference numeral 120. If the search is
not complete at status check 115, further searching 110 is performed.

[0103] After perusal of the various records and checks regarding the bona
fides of the IPA 105, if no encumbrances are found, control passes to a
check on whether the IPA presents an acceptable risk, designated by the
reference numeral 125. However, if an encumbrance is found, control
passes to a check on whether or not that encumbrance or defect in the IPA
105 can be cured, designated by reference numeral 130. If curable,
control passes to the aforementioned acceptable risk check 125. If not
curable, however, then consideration of the IPA 105 is likely at an end,
designated by the reference numeral 135. Nonetheless, even if the IPA 105
bears a problematic risk, then the transaction could still proceed,
perhaps with a lower price or fewer obligations involved, the risk then
being deemed acceptable, where the control would then pass to the
acceptable risk check 225, as discussed.

[0104] In any event, with the encumbrances enumerated and investigated,
cures attempted or accomplished, risks assessed and accepted, control
then passes to proceed with the transaction, i.e., the license, sale,
indemnification, etc. of the IPA 105, generally designated by the
reference numeral 140.

[0105] With reference now to FIG. 2 of the Drawings, there is illustrated
therein a representation of various ways the principles of the present
invention may be employed, generally designated by the reference numeral
200. As shown, two parties, generally designated by the reference
numerals 210 and 220, respectively, are negotiating a transaction
involving an IPA 230 in exchange for some value, generally designated by
the reference numeral 240.

[0106] As described hereinabove, parties 210 and 220 may be negotiating an
ownership transference of IPA 230 in exchange for money or other value
240. Parties 210 and 220 may alternatively represent a licensor and
licensee, negotiating a license or use of the IPA 230 in exchange for
money, a cross license with other IPAs or other value 240.

[0107] Alternatively, the parties, particularly party 220, may require
insurance that the IPA 230 has adequate title for the transaction, i.e.,
not subject to attack from third parties, and if so attacked, the risk of
survival is good.

[0108] It should, of course, be understood that party 220, in
investigating the worth of the offered IPA 230, e.g., in connection with
a transference, would perform a due diligence on the IPA 230, such as
illustrated in FIG. 1 and described in detail hereinabove. A third party
may also be involved to facilitate the arrangement or perform the
requisite background checks on the IPA 230, e.g., a due diligence
searcher of the various official and unofficial records involving the IPA
230, as well as interviews and meetings with inventors and other parties
of interest, as described in more detail hereinabove. Additionally, as
discussed, a third party, such as an indemnifier or other third party of
interest to the transaction, may be involved to facilitate or seal the
deal, pursuant to the results of the comprehensive identification and due
diligence analysis performed on the IPA 230, such as shown in FIG. 1 and
described in detail herein.

[0109] Various other scenarios with the parties 210 and 220 involving
insurance and indemnification are discussed hereinabove, and equally
applicable to the arrangement illustrated in FIG. 2.

[0110] The previous description is of preferred embodiments for
implementing the invention and should not necessarily be limited by the
description. The scope of the invention is instead described by the
following claims: